Benelux trademark law now in line with EU Trade Marks Directive

New possibilities for non-conventional marks

One of the most important changes to the BCIP is the deletion of the requirement of graphical representation, which is considered an important step into modernizing and simplifying Benelux trademark registration procedures. This opens up the register for a multitude of non-conventional marks, such as motion marks or sound marks via an MP3-file.

Harmonization and expansion grounds for exclusion, opposition and cancellation proceedings

The absolute grounds for refusal are expanded to all signs that consist of a shape or other trait that is defined by the nature of the goods, or is necessary to obtain a technical effect or gives substantial value to the good. This also expands the grounds for opposition and cancellation proceedings. In addition, the requirement of a clear and precise description of goods and services is codified in accordance with the IP-Translator judgment (ECJ, C 307/10, 19 June 2012).

Strengthening of rights holder’s position

Moreover, the amended BCIP strengthens the right holder’s position in cases of comparative advertising, use of a trademark in a company name and counterfeit goods in transit. In addition, the property right’s position of trademark and design right owners is codified.

A system for registration of certification marks is being introduced.

Finally, the amended BCIP introduces a system for registration of certification marks, which ends the current practice of registering such marks as collective marks.

Authored by Josje Koehof

For  more information on the implementation of the EU Trade Marks Directive in Germany and other key jurisdictions, please access our January 2019 webinar recording here